The USPTO refused to register the proposed mark SUGAR BEACH for "Bathing suits; Beach cover-ups; Beachwear; Body suits; Bras; Dresses; Dresses for swimming; Jogging suits; Shirts; Swimwear; T-shirts; Tank-tops; Tops as clothing; all marketed and sold primarily to retail stores offering clothing and not cosmetics," finding confusion likely with the identical mark registered for "bath care and body care products, namely, bath gels, bath salts, body cleansers, body creams, body lotions, body polish, body scrub, exfoliants for skin, hand cream, shower gel, and liquid hand soap." Applicant Mocean Group argued that the limitation in its identification of goods ensures that the respective customers and channels of trade will not overlap. How do you think this appeal came out? In re In Mocean Group LLC, Serial No. 88716250 (January 22, 2021) [not precedential] (Opinion by Judge Christopher Larkin).
Because the marks are identical, a lesser degree of similarity
between the goods is necessary to support a finding of likely
confusion. Examining Attorney Andrea B. Cornwell submitted webpage
evidence showing that "one or more of the clothing items
identified in the application and one or more of the bath and body
care products identified in the cited registration are frequently
sold under the same mark." The Board noted that in many cases
it has found that "women's clothing and fragrances are
closely related, complementary products."
With regard to applicant's limitation in its identification of
goods - "all marketed and sold primarily to retail stores
offering clothing and not cosmetics" - the Board did not agree
that this limitation impacts the likelihood of confusion analysis.
First, the Board agreed with the examining attorney that this
supposed limitation is illusory because the term
"primarily" leaves open the possibility that applicant
sells to stores that do offer cosmetics. In any case, consumers
would not be aware of this limitation. The Board observed that
"where products are closely related, merely because the
products in fact would not be sold together would not necessarily
prevent consumers, when encountering the products in different
outlets, from believing the products come from the same
source." (quoting Wet Seal, 82 USPQ2d at 1641).
The Board concluded that the third DuPont factor
was neutral.
The Board found that confusion is likely, and so it affirmed the refusal:
Consumers familiar with the registered mark SUGAR BEACH for bath and body care products who subsequently encounter Applicant's SUGAR BEACH women's clothing, in retail clothing stores or elsewhere, could easily believe mistakenly that the cosmetics company has extended its line into women's clothing.
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TTABlogger comment: Does it make sense for the Board to say. in case after case, that when the marks are identical, a lesser degree of similarity between the goods is needed to support a likelihood of confusion finding? Aren't they separate questions?
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